Australia’s Raising the Bar Act becomes law: 12 ways patent applicants should prepare
The Intellectual Property Laws Amendment (Raising the Bar) Act 2012 received Royal Assent on 15 April 2012, and as such most provisions will take effect from 15 April 2013. This is the most significant amendment to Australia's intellectual property laws since the commencement of the Patents Act 1990.
New experimental use exemptions to take immediate effect
One of the few provisions to take effect immediately is the experimental use exemption which allows researchers in Australia to carry out experiments relating to the subject matter of patented inventions without infringing the patent. Although some commentary in relation to this exemption has suggested that it only applies to non-commercial experimentation, there is nothing in the wording of the provision which excludes experiments conducted for commercial purposes.
New requirements for patent applications
Your complete guide to the changes
For more information about the changes to Australia's patent system introduced by this Act please see our comprehensive review of the Intellectual Property Laws Amendment (Raising the Bar) Bill.
The Act raises the requirements for patentability, and the requirements for patent specifications, for all applications filed from 15 April 2013, and for patent applications filed prior to that date for which an examination request has not been filed prior to 15 April 2013. A number of actions are available to patent applicants to ensure that the current, more lenient, patentability and specification requirements apply to their applications. Since the commencement date falls on a Monday, it will be necessary to take these actions by no later than Friday 12 April 2013 ahead of the commencement date. Some of these actions, and other actions to be taken before commencement, are set out below.
12 ways patent applicants and practitioners can prepare for Raising the Bar commencement
Patent applicants and patent practitioners should consider taking the following actions prior to the commencement date of 15 April 2013, (by no later than Friday 12 April 2013).
- Request examination of all pending patent applications prior to commencement. If acceptance is to be deferred this should be requested at the time of filing the examination request, because after commencement the Commissioner will have the discretion to refuse a request for deferment of acceptance.
- Enter National phase in Australia and file an examination request prior to commencement for all International applications pending prior to that date.
- Consider filing a Convention application in Australia and filing an examination request prior to commencement if a PCT application has not been filed.
- Instead of filing an Australian provisional application as a means of setting a priority date, consider filing a complete application and filing an examination request prior to commencement.
- Where a unity objection has been raised, or where there is an intention to file a divisional application, file the divisional application with an examination request prior to commencement.
- Where an application is under opposition it will no longer be possible to file a divisional application after commencement. Consider filing a divisional application with an examination request prior to commencement.
- Any pending applications which are intended to be made divisionals of earlier applications will need to be converted to divisional status prior to commencement if the deadline for filing a new divisional application has already passed. After commencement it will not be possible to convert an application to become a divisional after the deadline for filing a new divisional has passed.
- If it is intended to withdraw an opposed application in favour of a divisional application which has been filed, or will be filed prior to commencement, it will be advantageous to withdraw that opposed application prior to commencement. After commencement an opposed application can only be withdrawn with the consent of the Commissioner and it is possible that such consent will only be given if the divisional application is also withdrawn.
- Any request for modified examination will need to be filed prior to commencement because modified examination will not be available after commencement.
- Australian provisional applications intended for completion after commencement should include sufficient description to provide the necessary level of "support" for claims in the complete application.
- Consider amending pending applications to include additional description, examples or the like prior to commencement because after commencement it will not be possible to add matter to a patent application.
- In order to ensure a new application to be examined under the new law meets the new utility requirement, consider amending the specifications of pending applications prior to commencement to clearly describe the utility of the invention. As mentioned above, it is advisable to file an examination request prior to commencement.
Changes to the acceptance and examination request periods
There are a number of additional changes to the patent system which will be introduced with the new law, although these additional changes will be the subject of regulations which have not yet been drafted. Of particular note is the stated intention of IP Australia to reduce the 21 month acceptance period to 12 months, and to reduce the period for requesting examination following the issuance of a Direction to Request examination from 6 months to 2 months. Under the current law when acceptance is not secured within the 21 month acceptance period it is common to refile the application as a divisional application of itself to maintain pendency. After commencement any divisional filed to maintain pendency will be subject to the new law. Accordingly, it is anticipated that applicants will be more inclined to request hearings to secure acceptance of the parent application rather than resort to the filing of divisional applications to maintain pendency.
Changes to trade marks and other IP laws
The Act also makes a number of changes to the trade mark system including significant changes to opposition case management, custom seizure provisions, the addition of punitive damages for infringement, introduction of summary offences with lower fault requirements and penalties and a rewording of section 41 to deal with the presumption of registrability. A summary of these changes may be found in an earlier publication on our website.